Upper Deck Co.

Trademark Trial and Appeal Board

Feb 14, 2001

No. 75064130 (T.T.A.B. Feb. 14, 2001)

2/14/01
Paper No. 16
HWR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Upper Deck Company
________
Serial No. 75/064,130
_______
Paul F. Kilmer and Stephen J. Jeffries of Gadsby & Hannah
LLP for The Upper Deck Company.
Meryl L. Hershkowitz, Managing Attorney, Law Office 113.
_______
Before Simms, Seeherman and Wendel, Administrative
Trademark Judges.
Opinion by Wendel, Administrative Trademark Judge:
The Upper Deck Company has filed an application to
register the mark depicted below for “trading cards.”1
1 Serial No. 75/064,130, filed February 21, 1996, claiming a date
of first use and first use in commerce of May 30, 1988.
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/064,130
2
The mark is described as follows:
The mark consists of a hologram device which is
applied to the goods, trading cards. The mark is
discrete from and does not constitute a part of the
subject matter of the trading card. Neither the size
nor the shape of the hologram device, nor any content
which may be represented within the hologram device,
nor the positioning of the hologram device on the
trading card are claimed as features of the mark.
The drawing is lined for the color silver, but color is
also not claimed as a feature of the mark.
Registration has been finally refused under Section 1,
15 U.S.C. § 1051, of the Trademark Act on the ground that
applicant is seeking to register more than one mark.
Registration has also been finally refused under Sections
1, 2, and 45, 15 U.S.C. §§ 1051, 1052, and 1127, of the
Trademark Act on the ground that the proposed mark does not
function as a trademark.
The refusals have been appealed and both applicant and
the Examining Attorney have filed briefs.2 No oral hearing
was requested.
Seeking to Register More Than One Mark
The Examining Attorney bases this refusal on the
recent holding of our principal reviewing court in In re
International Flavors & Fragrances Inc., 183 F.3d 1361, 51
2 The application was reassigned to the Managing Attorney for
preparation of the Examining Attorney’s brief. For purposes of
this opinion, we have used the term Examining Attorney to refer
to both the prior Examining Attorney and the Managing Attorney.
Ser No. 75/064,130
3
USPQ2d 1513 (Fed. Cir. 1999) that, under Section 1 of the
Trademark Act and the rules promulgated thereunder, a
trademark application may only seek to register a single
mark. Here, as she points out, the description of the mark
identifies the mark as a hologram device, in any size,
shape, content or position on the trading card. The mark
as shown on the specimens of record covers a variety of
shapes, such as a baseball field, a racing flag, a star, a
diamond and others, in various sizes and positions on the
cards, most of which appear to have the words UPPER DECK
embedded in the hologram. Thus, the Examining Attorney
argues, applicant is seeking to register an unknown number
of marks in this one application.
The Examining Attorney likens the present situation to
that in In re International Flavors, supra, in which the
Court found applications seeking to register LIVING XXXX
FLAVORS and LIVING XXXX FLAVOR (with the XXXX intended to
represent a specific herb, fruit, plant or vegetable),
along with LIVING XXXX (with the XXXX intended to represent
a botanical or extract thereof), to be in violation of the
one mark per application requirement of the Lanham Act.
She argues that similar to the “phantom marks” in that case
and to the multiple likenesses or images of Elvis Presley
involved in In re Elvis Presley Enterprises, Inc., 50
Ser No. 75/064,130
4
USPQ2d 1632 (TTAB 1999), the hologram designs which
applicant is seeking to register constitute more than one
mark. The Examining Attorney contends the present
application is even more “problematic” than the other cases
in that:
Here, not just a few words may be changed in
any particular mark, and not just one individual
in different poses is displayed, but other
significant elements such as size, shape, content
and position are variable. ... By disregarding
the shape, size, positioning and content of the
hologram, applicant is in effect claiming any
hologram on a trading card as its mark, making it
impossible for the public or the examining
attorney to know what elements make up
applicant’s mark. Moreover, allowance of such a
mark would effectively grant applicant a monopoly to
bar any one else from using a hologram as a mark on a
trading card. (Brief, p. 7).
The Examining Attorney also points to the problem of
notice to the public or to the Examining Attorney as to the
elements which actually comprise the mark or the commercial
impression created thereby. She notes the difficulty of
the Examining Attorney in performing an adequate search of
the mark without any indication of the particular design of
the hologram.
Applicant insists, on the other hand, that the matter
it describes as its mark falls squarely within the
definition in Section 45 of the Trademark Act of a
“trademark” as “any... device... used by a person... to
Ser No. 75/064,130
5
identify and distinguish his or her goods... from those
manufactured or sold by others and to indicate the source
of the goods... .” Applicant contends that its mark is a
single “device,” namely a hologram, and that “[p]erception
of the recognizable physical and visual properties of a
hologram is not dependent upon the size or shape of the
hologram, or by the particular place where the hologram is
affixed to the goods.” (Brief, p. 4).
Applicant relies upon the Supreme Court’s observation
in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S.
159, 34 USPQ2d 1161 (1995) that “[s]ince human beings might
use as a “symbol” or “device” almost anything at all that
is capable of carrying meaning, this language [Section 45],
read literally, is not restrictive.” It is because of
this, applicant argues, that a color, a scent, and a sound
have qualified as “trademarks,” and it is because of this
that applicant’s single device of a hologram appearing on
the face of a trading card qualifies as a “trademark.”
Applicant argues that, unlike the phantom marks
involved in In re International Flavors, there is no
missing element in its mark. The carved-out elements, such
as size or shape, according to applicant, are not
changeable features or even part of its mark; the only
device for which registration is sought is the presence of
Ser No. 75/064,130
6
a hologram. Applicant argues that the Elvis Presley case
is similarly distinguishable, in that there the unspecified
and variable images of Elvis were part of the mark, whereas
here the variable elements are not part of the mark sought
to be registered.
Insofar as notice is concerned, applicant argues that
the nature of its mark is clearly set forth in the
description of the mark and the public would understand
what a hologram is. Applicant insists that since the
Examining Attorney included the statement in her first
action that no similar marks had been found, a search for
conflicting marks was in fact possible.
We find the Court’s holdings in In re International
Flavors fully applicable here. The Court succinctly stated
that an application must be limited to one mark. The Court
went on to note the function of registration as
constructive notice to the public of a registrant’s
ownership of a mark and that
[i]n order to make this constructive notice
meaningful, the mark, as registered, must
accurately reflect the way it is used in commerce
so that someone who searches the registry for
the mark, or a similar mark, will locate the
registered mark.
Ser No. 75/064,130
7
51 USPQ2d at 1517. Thus, the Court found that “phantom”
marks with missing elements cover too many combinations and
permutations to allow an effective search of the register.
We find applicant’s present attempt to register a
hologram which may have a myriad of shapes, sizes, contents
and the like to encompass an even larger number of
combinations than the XXXX-containing word marks in In re
Interational Flavors. The specimens themselves show the
varying commercial impressions created by the holograms as
used on the trading cards. The design may be a baseball
field, a racing flag, or whatever applicant adopts for that
particular card. The constructive notice which the Court
found fundamental to federal registration would be
virtually non-existent were applicant permitted to register
“a hologram” as applied to trading cards.3 While applicant
may argue that there are no missing or changeable elements
in its mark as described, there are clearly missing or
changeable elements insofar as the images presented to the
public are concerned.
We find strong similarities here to In re Elvis
Presley, supra, wherein the applicant sought to register
3 In response to applicant’s argument that a search was made by
the Examining Attorney, we simply note that the Examining
Attorney was concurrently requiring the limitation of the
description of the mark to the baseball field design shown on the
drawing and obviously searched this design only.
Ser No. 75/064,130
8
for use on fabric “the likeliness and image of Elvis
Presley” in all possible permutations, without limitation
as to age, pose, or the like. Here as in Presley,
applicant is attempting to register an idea or concept,
rather than a single mark. In the Presley case the
applicant wished to register all likenesses of a particular
person, regardless of the appearance of that person or the
specific pose, so long as it was that particular person.
Here applicant wishes to register the presence of a
hologram on a trading card, regardless of the physical
attributes such as shape or position of the hologram, other
than being a hologram.
In the Presley case we rejected the attempt to claim
the likeness of Elvis Presley in general as a single mark.
Here we reject the attempt by applicant to register the
presence of a hologram in general as a single mark. We do
not accept applicant’s argument that “a hologram” is a
single “device” under Section 45 of the Trademark Act. “A
hologram” is not the same as “a color”, or “a sound,” or “a
scent”. Each of the latter, as registered, is further
defined, e.g., a particular color or hue (a green-gold
color in the Qualitex case); a particular sound (the sound
made by a Ship’s Bell Clock in In re General Electric
Broadcasting Co. Inc., 199 USPQ 560 (TTAB 1978); a
Ser No. 75/064,130
9
particular scent (a floral fragrance reminiscent of
Plumeria blossoms in In re Clarke, 17 USPQ2d 1238 (TTAB
1990).
We find that applicant’s “hologram,” without further
definition, constitutes more than one “device” as
contemplated by Section 45. Accordingly, we affirm the
refusal to register on the ground that applicant is seeking
to register more than one mark, which is prohibited under
Section 1 of the Trademark Act.
Proposed Mark Does Not Function as a Mark
While our affirmance of the preceding refusal is
sufficient to bar registration, in the interests of
completeness, we consider the refusal based on the ground
that the matter sought to be registered does not in fact
function as a mark. In doing so, we note that there were
many irregularities during the examination process with
respect to this ground. The original Examining Attorney
confusingly intertwined the terms “does not function as a
mark” and “functionality” throughout her arguments and
incorrectly refused to give any consideration whatsoever to
the Section 2(f) evidence which applicant submitted in
connection with this refusal. On review of the entire
record, however, we believe that applicant was on notice as
Ser No. 75/064,130
10
to the true nature of the refusal4 and was aware that de
jure functionality was not an issue. Moreover, applicant
argued the significance of its Section 2(f) evidence in its
brief, the present Examining Attorney took the evidence
under consideration in her brief, and applicant had an
opportunity to respond thereto in its reply brief.
Accordingly, we consider the issue fully briefed and ready
for decision.
The Examining Attorney maintains that the hologram
device that applicant seeks to register fails to function
as a trademark, in that it neither identifies nor
distinguishes the goods of applicant from those of others
nor serves to indicate the source thereof. Sections 1, 2,
and 45 of the Trademark Act. She argues that there is no
evidence of record which shows that the public would
perceive any hologram, regardless of content or design,
used on a trading card as an indication that applicant is
the source thereof. She relies upon NEXIS evidence made of
record during examination showing that other companies use
hologram devices on trading cards, as well as on other
products such as credit cards, CDs, apparel, and various
4 In applicant’s response of December 3, 1998, applicant
separately argued the “Refusal on Grounds that the Mark is not a
Mark,” as well as the “Functionality” issue.
Ser No. 75/064,130
11
types of tickets. She cites the most frequent reason for
the use of holograms, namely, as anti-counterfeiting
devices, and notes the NEXIS evidence made of record to
demonstrate use for this purpose. As further evidence of
this type of use of a hologram, she points to the
declaration of Martin Welling, which has been submitted by
applicant. Mr. Welling acknowledges that applicant’s
“trademark hologram, in addition to functioning as a source
indicator of applicant’s goods, also serves to inhibit the
production of counterfeit goods...,” although he goes on to
enumerate other anti-counterfeiting techniques that are
available to applicant’s competitors in the trading card
field.
Applicant asserts that the evidence which it submitted
in support of its claim of distinctiveness clearly shows
that applicant’s hologram functions as, and has come to be
perceived in the relevant marketplace as, applicant’s
source indicator. (Response of Dec. 3., 1998) (Brief, p. 6)
(Reply brief, p. 5-7). In particular, applicant points to
advertising copy referring to its “trademark hologram”; to
four letters from consumers, which applicant characterizes
as “unsolicited customer testimonials”; to its high sales
and advertising figures; and to the statement made by
Martin Welling in his declaration that although other
Ser No. 75/064,130
12
manufacturers of trading cards use holograms in the
“representation of the graphic content of their trading
cards,” he was “unaware of any other maker of trading cards
that uses a hologram as its trademark.” (Declaration,
par.4).
In response to the Examining Attorney’s argument that
the hologram functions as an anti-counterfeiting device,
applicant contends that this function does not “undermine”
the concurrent functioning of its hologram as a trademark.
Applicant goes so far as to contend that “every trademark
is an anti-counterfeiting device, designed to assure the
purchaser that the goods come from the desired source.”
(Response of Dec. 3, 1998, p. 6).
As previously noted, the evidence submitted by
applicant under a claim of acquired distinctiveness is
relevant to the refusal of the failure of applicant’s
unspecified “hologram device” to function as a mark and
thus has been considered. Upon consideration, however, we
find the evidence insufficient to establish that consumers
would perceive the mere presence of a hologram on a trading
card, and not in connection with the design, location,
content or other characteristics of any particular
hologram, as a trademark. Although applicant has submitted
a large amount of advertising copy in which the presence of
Ser No. 75/064,130
13
a hologram on the cards is touted, this promotion is
directed for the most part to the presence of a hologram as
a desirable feature of the cards, not as a trademark.
While applicant frequently refers in its advertising to the
fact that its cards are “holograpically enhanced,” this
promotion is simply as one more feature of its cards, along
with items such as “tamper resistant foil packaging” and
“in-your-face photography.” Even in those instances in
which reference is made to the “trademark hologram,” such
as “the Upper Deck trademark hologram means it’s the real
thing,” the inference is that the presence of a hologram
per se insures a genuine (non-counterfeit) product, not
that it serves as a source indicator for the cards.
The four unsolicited letters from customers only
reinforce our opinion that there is no recognition of the
mere presence of holograms on the cards as a trademark,
rather than as a feature of the cards. The suggestions in
these letters for new hologram designs or new series in
which a hologram is present constitute evidence of no more
than the fact that consumers are aware that applicant’s
trading cards include, as an element thereof, a hologram.
We agree with the Examining Attorney that these suggestions
for new hologram designs “cannot be interpreted as meaning
that these consumers recognize that any hologram device ...
Ser No. 75/064,130
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would be a source indicator simply because they recognize
that applicant applies holograms to trading cards.”
(Brief, p. 15).
The sales and advertising figures for applicant’s
trading cards per se are equally unconvincing. While sales
figures may be indicative of the commercial success of
applicant’s products, they do not demonstrate that the
holograms used thereon have acquired distinctiveness as an
indication of the source of the cards. See In Pingel
Enterprise Inc., 46 USPQ2d 1811 (TTAB 1998). Promotional
and advertising expenditures for the cards per se are
similarly unconvincing without concurrent evidence of
promotion of the hologram device as a trademark.
We find the circumstances here similar to prior cases
which have found an absence of evidence of the promotion
and consequent recognition by the public of the designation
sought to be registered as a trademark. See In re Edward
Ski Products, Inc., 49 USPQ2d 2001 (TTAB 1999)(no evidence
that configuration of ski mask either promoted or
recognized by purchasers as an indication of origin); In re
Bennetton Group S.p.A., 48 USPQ2d 1214 (TTAB 1998)(evidence
insufficient to show that green rectangle background design
promoted in and of itself or recognized by purchasers as
trademark for clothing items to which it is applied); In re
Ser No. 75/064,130
15
Pingel Enterprise Inc., supra, (absence of advertising or
promotion of trademark significance of product
configuration makes consumer recognition as trademark
unlikely). Here, not only is there minimal evidence that
applicant has promoted the presence of a hologram per se on
its trading cards, regardless of design or content, as an
indication of origin, but, even more significantly, there
is no competent evidence of consumer recognition of the
hologram as a trademark.
Moreover, we have the counterbalancing effect of the
similar use of holograms by competitors in the field. As
pointed out earlier, evidence has been made of record
showing the use by others of comparable hologram devices on
trading cards. While applicant may argue that these are
not trademark uses, the common use of holograms for non-
trademark purposes means that consumers would be less
likely to perceive applicant’s uses of holograms as
trademarks. Holograms in general have an anti-
counterfeiting function; applicant has admitted that even
its hologram serves this purpose. Furthermore, while
applicant may argue that every trademark has an anti-
counterfeiting function, the opposite is not true. Not
every anti-counterfeiting device functions as a trademark.
This is blatantly obvious from the evidence of record
Ser No. 75/064,130
16
showing common use of holograms on a variety of items for
anti-counterfeiting and verification purposes, but not
source identification.
Accordingly, we find that applicant has failed to
establish that the mere presence of its hologram device,
and not in connection with the design, location, content or
other characteristics of any particular hologram, functions
as a trademark for trading cards.
Decision: The refusals to register under Section 1 on
the ground that applicant is seeking to register more than
one mark and under Sections 1, 2, and 45 on the ground that
the hologram device of applicant fails to function as a
trademark are affirmed.